Patent filing strategies to stay ahead in growing markets

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29 November 2018
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Patrick Wingrove, London

In-house counsel are trying to break down silos between business departments to help them work out where they will and won’t need patents in the next five to 10 years

The ability to better identify growing markets for the business’s products and services is pushing more patent portfolio managers to implement cross-collaborative strategies.

Five corporate lawyers from patent-focused businesses tell Managing IP that they are working to break down silos between IP, commercial, research and development (R&D), and marketing departments to help drive better communication about jurisdictional trends or changes and regional infrastructural developments.

In-house sources explain that if they can work with non-IP colleagues to find out where the business will want to be in five to 10 years, they can begin to expand their portfolios in that region and secure competitive advantage for the company.

Right place, right time

The head of IP at a factory tech manufacturer says his firm attained competitive advantage in the US after its shale gas boom in 2013.

“We had patents in the US even though no factories that used our technology had emerged in the past 20 years, and we kept them for marketing reasons because we thought a US patent signalled to the market that we were innovative,” he explains.

“That was in 2010, and in 2013 the shale gas boom happened and suddenly we sold seven licences for our technology in two years.”

He adds that while this particular example was largely down to luck, it emphasised that the business could replicate this success by implementing communication mechanisms between the sales, marketing and IP departments.

His company serves plants that are typically built in places where natural gas is cheap. New gas fields are periodically discovered in countries such as Nigeria where they will eventually be exploited, and the company’s patent department can use the information gathered by the company to decide whether and how to build a portfolio there and get competitive advantage.

Collaborative approaches of this nature can also help IP departments work out where they no longer need protection so they can shed patents and enable cost savings.

Opportunity meetings

The factory tech head of IP says establishing this connected approach to geographical portfolio management is a matter of setting up meetings with the sales and commercial departments and discussing where the company may need patents in the near future.

“We have an IP chairing committee that meet once a month or so and everything related to IP is discussed – including the strategy for where we should be and where we want to file”

The IP manager at a digital printing company agrees with this approach, and adds that it is important for her firm to check growing markets and analyse statistics where the printing industry could rapidly grow in the next decade.

“We have an IP chairing committee that meet once a month or so and everything related to IP is discussed – including the strategy for where we should be and where we want to file,” she says. “That includes representatives from R&D and marketing and the CEO – anyone who can provide strategic insight into the business.”

She adds that different departments also try to ensure that data and presentations are shared to keep the business better informed. The firm’s marketing department, for example, follows markets and periodically prepares reports for their purposes that is also passed to the IP department.

“I can use that data and numbers to see the statistics for the emergence of digital printing – such as which areas are becoming more digital.”

The IPR manager for a sandpaper and abrasives manufacturer adds that his company also believes it is important to regularly speak with sales, marketing and commercial to work out where the emerging markets for their products and services are.

“Patent must be tightly connected to the market and the areas that are or soon will bring in the money,” he says. “IP should be a part of everything we do, including when we launch products or start up projects in new areas.”

Follow the competitor

Another way departments can work together to enable better geographic patent portfolio management is in monitoring competitors. The vice-president of IP at a semiconductor manufacturer points out that if a competitor suddenly ramps up its presence in a previously unimportant market, that can be a good sign they know something that you do not and that it could be worth filing patents there.

He adds that his company has implemented mechanisms to watch competitor activity, such as where they are filing patents or where they are putting their investment, and ensure this knowledge is communicated and analysed between different departments.

The IP manager at a digital printing company says her firm similarly monitors competitors so that they can file key patent applications before their competitors and try to understand their motives.

She adds that her company already considers blocking competitor access to suppliers with particularly innovative technology by filing patents in that supplier’s geographic markets.

“It could be a supplier that provides something unique that cannot easily be replaced. Our main concern there will be whether that supplier would provide the same tech to our competitors, and we want to be able to hold leverage over them.”

Where not to be

While working with other departments is a good way to identify filing opportunities, it is also a useful means of determining where the business can shed its patents. The business may have filed its patents in a region where the markets did not grow as it expected or where initially strong demand dropped over time – and could consider dropping those to save money that could be reinvested in emerging or already strong markets.

“Perhaps a business decided to take its products to Argentina because it believes demand there is growing. But if that turns out not to be the case, it should get rid of that protection because filing in that region costs as much as several other jurisdictions combined,” the IP director at a nutrition technology company points out. He adds that such an assessment requires a strong collaborative culture between departments.

“You can say, based on the current markets and regions, let’s cut these patents because we will not sell anything and neither will our competition”

This collaboration can also help patent departments identify upcoming downturns in markets or regions. This can be an opportunity to get rid of old patents.

The factory tech head of IP explains that his business can predict downturns based on the number of plants that are built in a particular region. If seven are built in one year, for example, it will likely be determined that there is an overcapacity and the market does not need any more.

He adds that it takes three years to build these types of factories. If the business has 18-year-old patents, which will only last another two years, and it knows that it is unlikely to sell anything in that time, it can shed those patents and save money.

“You can say, based on the current markets and regions, let’s cut these patents because we will not sell anything and neither will our competition and we will not be able to lock them in three years when things pick up and so there is no point keeping them.”

The sandpaper IPR manager says his company has a similar strategy, and adds that there is indeed “no point keeping patents alive just for fun”.

The digital printing IP manager points out that this strategy is not currently applicable to emerging industries that are unlikely to experience a downturn any time soon, such as digital printing, but worth keeping in mind for the future.